2021-07-03
2020 was a challenging year for everyone. Many businesses around the world had to shut down temporarily or transition into new product offerings. Stores in Canada were not spared during the pandemic.
Trademark owners need to understand how business interruptions or closures can affect their trademark rights. After all, no enterprise wants to lose its trademark rights to another business. This article will talk about the importance of trademark rights and ways to keep them during the pandemic in 2021.
How to Use Your Trademark Rights
Trademark rights are tied to its usage. This rule applies to both Canada and the US. Generally, use means creating an association between a trademark and specific goods or services so that consumers can identify the service and goods as being performed or make by a specific business. You can apply the use of the trademark to goods through the packaging.
The trademark is displayed so users or consumers can distinguish it from other brands. For services, the trademark is used by advertising the services in association with the mark. Another way is by displaying it while the service is being provided.
However, business operations were interrupted during the COVID-19 pandemic. It was challenging for many stores or services to continue their trademarks. This can be problematic for Canada and the US because non-use of a registered trademark can result in cancellation after being deemed abandoned.
How To Keep Your Trademark Rights?
Since you can’t continue your business operations during the pandemic, you might be worried about losing your trademark rights. Here are some things you can do, so your trademark rights won’t be affected. For Canadian registrations, the "use" of a trademark is no longer required to secure its registration.
Suppose you filed a trademark application prior to the COVID-19 pandemic, and the application was accepted. But the pandemic struck and your plans to operate your business were halted. In this case, you can still obtain a registration. However, there are some reasons why you need to begin to use your trademark as soon as possible.
For Canadian trademark owners, Section 45 of the Canadian Trademarks Act is an important rule that you must know. It states that a registered trademark can be "expunged" (i.e. cancelled) if it has not been used during the last three years. So, if you haven’t been using your trademark, then it can be cancelled.
Luckily, there are situations where you won’t lose your trademark. One is if you were actively using the mark in association with your goods or services prior to COVID-19 and you own a Canadian registered trademark. If this is the case, then the non-use of a trademark counts under "special circumstances."
With this, it is unlikely that your registration will be vulnerable to expungement under Section 45 of the Act. Your reasons for stopping your operations are excusable. You just need to resume operations as soon as possible.
If you are a trademark owner who stopped operation before the pandemic, there is the risk of expungement. To avoid expungement, you will likely need to demonstrate that you had a bona fide intention to resume use. Section 45 proceedings require evidence be provided and determinations are made on a case by case basis.
Final Thoughts
Expungement is one of the worst things that can happen to a trademark. However, if your reason for not using a trademark is because of the pandemic, it is likely excusable as long as you were using it prior to the pandemic and plan to resume using it soon. The best course of action for Canadian and US trademark owners is to use the trademark as soon as possible.
Are you thinking of trademark registration in Edmonton or Calgary? Contact us for assistance.
